Archived updates for Monday, August 07, 2006

Thoughts on Inventive Step from the U.K.

The overall message of the responses appears to be that respondents are happy with our current practice. Where there are complaints, these tend to be confined to specific scenarios rather than ‘across the board’ failings. For example the ‘obvious to try’ formulation used recently by the UK courts when refusing some biotechnology patents caused concern to some respondents involved in that sector.

There was some concern about lack of consistency either within the UKPO itself, between the UKPO and the UK courts, or between the UKPO and Europe, but again these were limited to particular situations rather than applying generally. Several comments were made that the quality of search is critical and this may well be a focus for future work. It certainly seems that the perceived difference in ‘strictness’ between the UK courts and UKPO is largely due to the more exhaustive prior art investigation that is done during post grant litigation of a patent.

The language of patent applications was a concern to some respondents with equests to simplify legalese in applications. There also appeared to be a lack of understanding among some respondents of the mechanism provided by section 21 of the Act for concerned third parties to make observations regarding the patentability of applications being considered.

As expected there were comments emphasising that a detailed analysis and well reasoned objection are vital in dealing with inventive step effectively. This analysis should include detailed consideration of such factors as why documents or references would be combined by the man skilled in the art. It is clear that a comprehensively argued objection is beneficial to the applicant and to the overall processing of the patent and several respondents highlighted this in their replies. However it must be remembered that there are occasions (such as where an overly broad initial claim islikely to be heavily amended) when a less detailed objection might be appropriate.